What is the legal framework for trademark prosecution in Norway?
The Trademark Act 2010 ('varemerkeloven' in Norwegian) regulates the registration, administrative opposition, cancellation and invalidation proceedings regarding trademarks. As well as the formal procedural requirements, this act also contains the material requirements for registration of a trademark.
The act incorporates the EU Trademarks Directive (2008/95/EC) into Norwegian statutory law. While Norway is not a member of the European Union, its membership to the European Economic Area involves the incorporation of a substantial amount of EU legislation. Accordingly, EU case law carries significant weight when interpreting the Trademark Act (eg, see Route 66 (HR-2016-2239-A)).
Parliament has enacted an amendment to the Trademark Act to conform with the latest EU Trademarks Directive (2015/2436/EU).
How are trademarks registered in Norway?
The Norwegian Industrial Property Office (NIPO) is responsible for the administrative procedures leading up to and following a formal trademark registration. This includes the registration itself and any third-party objections or oppositions during the registration process.
Trademark applications must be filed in Norwegian. Should additional documentation be required, the NIPO will also accept the use of Danish, Swedish and English. If an application is filed in an incorrect language, the NIPO will grant the applicant a limited time to submit a translation.
Under Norwegian legislation, both physical people and legal entities may submit trademark applications.
To prevent official objections or oppositions, applicants may search the trademark database before filing their application. The NIPO provides a search engine which enables pre-application examination into similar marks.
NIPO final decisions may be appealed to the independent IP Appeal Board. Appeal Board decisions may in turn be appealed before the regular court systems.
Once a trademark has been registered, its registration will remain valid for 10 years. Registrations may subsequently be renewed for additional 10-year terms.
What use requirements exist for trademarks under Norwegian legislation?
The Trademark Act requires genuine use of a trademark within five years of its registration or, in the case of dormancy, no more than five years of suspended use. 'Genuine use' generally means use of the trademark with the purpose of gaining or maintaining a market share within the relevant public. The objective of this legislation is to limit purely defensive registrations that are devoid of any legitimate mercantile intent. Failure to initiate genuine use of a trademark may result in invalidation through administrative review.
There is no clear Supreme Court precedent as to what extent of use meets the legal requirement. Accordingly, European Court of Justice practice is relevant when deciding whether a mark has been put to genuine use on the Norwegian market (eg, see Minimax (C-40/01), La Mer Technology (C-259/02) and Vitafruit (C-416/04)).
Is an attorney or agent required for the trademark application procedure?
No formal requirement exists for foreign applicants to make use of a Norwegian agent during the registration process. However, seeking assistance from a qualified counsel is highly advised.
If an agent is used, the NIPO will require that a power of attorney is submitted, which may be done at any point during the examination process.
Are Norwegian trademark applications and registrations publicly available?
All information included in applications is publicly available from the day that the application is filed. No option exists to withhold applications from the public, neither in part nor in their entirety.
Do unregistered trademarks enjoy protection under the Trademark Act?
Trademark rights may be obtained through registration or by establishing such rights through use. Although both options are equal in terms of protection and enforcement, registration is undoubtedly the safer and more efficient option.
Rights in a trademark through use alone are established where the relevant consumers consider such trademark well known as the trademark of a particular party. This 'well known' criteria does not coincide with that of famous marks.
Strict requirements exist for documenting use-acquired rights in trademarks. Following the Supreme Court's decision in Gule Sider (Norsk Retstidende 2005 page 1601), simply spending a large amount of money on resources in marketing is insufficient. To establish protection, a concrete knowledge in the relevant public must be demonstrated.
To some extent, the Marketing Control Act may provide supplementary protection against unlawful imitation and unfair business practices.
Do famous trademarks enjoy extended protection in Norway?
Owners of famous and well-known trademarks enjoy extended protection. This materialises through protection across a broader scope of goods and services as well as protection against marks that are similar, as opposed to the confusingly similar criteria for other marks.
How are trademark rights enforced in Norway?
The Trademark Act regulates how trademarks are enforced under Norwegian law. Depending on the claim, several options are available.
Court proceedings
First, claims of infringement, invalidation or cancellation of a trademark may be filed directly before the ordinary courts. The Oslo District Court is the compulsory first-instance court, as it has exclusive jurisdiction over IP matters.
Administrative reviews
Invalidation or cancellation claims (not infringement claims) may be filed directly with the NIPO, following a 2010 amendment to the Trademark Act. The regulations were changed to provide a simpler, less costly and more efficient alternative to enforce trademark rights than court proceedings.
Administrative proceedings are usually performed only in writing and no discovery is involved. During an administrative review, the NIPO will consider the claim in accordance with the Trademark Act and issue a decision much quicker than would be the case through the court system.
NIPO decisions may be appealed before the IP Appeal Board, which in turn may be appealed before the regular court system.
Can trademark rights be effectively enforced in Norway?
Generally, the courts are thorough in their review of trademark appeal cases and infringement matters. Although much care is taken in the review of technical views expressed by the NIPO and the IP Appeal Board in patent cases, no such legal doctrine exists in trademark-related case law, as indicated in the Supreme Court case Mozell (Norsk Retstidende 1995 page 1908).
As a result, the Supreme Court has gone to great lengths in strengthening trademark owners' protection against trademark infringement. Although unsurprising, the Supreme Court case HR-2020-1142-A ruled that the sale and use of replacement screens which bore the Apple logo, albeit not visible to the end-user, represented infringing use. The decision is one of many that indicates a strengthening of the protection offered to trademark holders.
Can trademarks be considered as property in Norway?
Under Norwegian law, no recording of agreements is required for legal effect. Accordingly, licensing agreements are regulated by general Norwegian contractual law.
Currently, trademark rights cannot be subject to security interests, unless qualified to be included in plant and machinery. However, changes in the Trademarks Act are expected to be implemented sometime in 2021. Such changes will allow registered trademarks, national trademark applications and international trademark registrations which have been granted protection in Norway to be subject to security interests. Statutory protection for such security interests will be obtained through registration in the trademark register.
Hallvard Sund, intern, assisted in the preparation of this article.
